Appeal No. 1999-0828 Page 3
Application No. 08/526,743
1998) and the final rejection (Paper No. 6, mailed June 5, 1998)
for the examiner's complete reasoning in support of the
rejection, and to the brief (Paper No. 10, filed October 15,
1998) and reply brief (Paper No. 13, filed December 14, 1998) for
appellants’ arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellants’ specification and claims, to
the applied prior art reference, and to the respective positions
articulated by appellants and the examiner. Upon consideration
of the record before us, we affirm-in-part.
In rejecting claims under 35 U.S.C. § 103, it is incumbent
upon the examiner to establish a factual basis to support the
legal conclusion of obviousness. See In re Fine, 837 F.2d 1071,
1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the
examiner is expected to make the factual determinations set forth
in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467
(1966), and to provide a reason why one having ordinary skill in
the pertinent art would have been led to modify the prior art or
to combine prior art references to arrive at the claimed
invention. Such reason must stem from some teaching, suggestion
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